Trademark Dilution, Part 1 [2]

By: Olivier Taillieu
I.P. Lund., 163 F.3d at 50.

The concept of dilution can be further subdivided in two categories: "Blurring" and "tarnishment." Blurring is best described above in the I.P. Lund Trading ApS v. Kohler Co. decisionto wit, it occurs when the "unique and distinctive link" between the plaintiff's mark and its goods or services is muddied and so its value is depressed. Tarnishment, occurs when a famous mark is associated with an offensive or inferior good, or is portrayed in a degrading context, thus lessening the value of the senior mark.

In short, the nature of dilution is to eat away at the value of another's trademark. And, in precluding the otherwise competitive acts that might dilute a mark, the anti-dilution statute gives the mark-holder a much broader property right than a mere claim for infringement does. E.g., The Toro Co. v. Torohead, Inc., 2001 WL 1734485 (Trademark Tr. & App. Bd.), 61 U.S.P.Q.2d 1164. (It is a "bedrock principle of trademark law" that multiple uses of a term as a mark can co-exist when used for non-related goods. Dilution upsets this balance and enables the owner of a famous mark to prohibit the use or registration of the same or substantially similar mark even on unrelated goods.)

Dilution Cases Are Subject to a High Degree of Scrutiny

Dilution is thus deemed to be an "extraordinary remedy." Advantage Rent-A-Car Inc. v. Enterprise Rent-A-Car Co.,

238 F.3d 378, 381 (5th Cir. 2001). As the Fourth Circuit explained:

[W]e simply cannot believe that, as a general proposition, Congress could have intended, without making its intention to do so perfectly clear, to create property rights in gross, unlimited in time (via injunction), even in 'famous' trademarks.

Ringling Bros.-Barnum & Bailey Combined Shows v. Utah Division of Travel Development, 170 F.3d 449, 459 (4th Cir. 1999). See also Nabisco, 191 F.3d at 224 n.6 (quotation marks omitted) ("We agree that the dilution statutes do not prohibit all use of a distinctive mark that the owners prefer not be made .... [W]e agree with the Fourth Circuit that the dilution statutes do not create a 'property right in gross"'); I.P. Lund, 163 F.3d at 47 ("[T]he standard for fame and distinctiveness required to obtain anti-dilution protection is more rigorous than that required to seek infringement protection").

Thus, a plaintiff in a dilution case is likely to face an uphill battle. 4 McCarthy on Trademarks and Unfair Competition § 24:89.50 (4th ed.); e.g., The Toro Co. v. Torohead, Inc., 2001 WL 1734485 (Trademark Tr. & App. Bd.), 61 U.S.P.Q.2d 1164 (stating that unlike in trademark infringement cases, doubts are not resolved in favor of the party claiming dilution).

This article explains the elements and scope of a federal cause of action for dilution for a mark. Infringement is discussed in [Related Article].

Elements of a Federal Dilution Claim

Section 43(c) of the federal Lanham Act lays out the requirements for pleading and proving a federal dilution claim. 15 U.S.C. § 1125(c). This section, which comes from legislation called of the Federal Trademark Dilution Act (FTDA), says states that the holder of a "famous mark" may stop another from using "in commerce" an identifier that "is likely to cause dilution by blurring or dilution by tarnishment."

That definition sets up a neat four-part test courts can follow to determine if a mark has been, or is likely to be, diluted.

To prove dilution, then, a mark holder must establish all of the following: (1) the mark is distinctive and famous; (2) the defendant is using its own mark in commerce (3) the defendant's use begin after the plaintiff's (4) the defendant's use is "likely" to cause dilution by blurring or tarnishment

15 U.S.C. § 1125(c).

Mr. Taillieu is a partner in the litigation department of Zuber & Taillieu LLP (http://www.zuberlaw.com). He earned his J.D. with highest honors from George Washington University School of Law, where he graduated #1 in the day class and was Managing Editor of the Law Review.

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